WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
WISeKey SA v. Domain Privacy Services / Park HyungJin
Case No. D2019-0281
1. The Parties
The Complainant is WISeKey SA of Geneva, Switzerland, represented by SafeNames Ltd., United Kingdom.
The Respondent is Domain Privacy Services of Seoul, Republic of Korea / Park HyungJin of Sejong-si, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <wisekey.net> is registered with Megazone Corp., dba HOSTING.KR (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2019. On February 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 11, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 12, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center notified the Parties in both English and Korean that the language of the registration agreement for the disputed domain name is Korean. On February 14, 2019, the Complainant filed an amended Complaint and requested for English to be the language of the proceeding. The Respondent did not submit any request regarding the language of the proceeding.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent in English and Korean of the Complaint, and the proceedings commenced on February 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 11, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 12, 2019.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on March 21, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant, WISeKey SA, is a Swiss cyber security company founded in 1999 and is based in Geneva, Switzerland. It has established itself in the market of cyber security and is listed on the SIX Swiss Stock Exchange. The Complaint’s official website is “www.wisekey.com”, which is used to provide information on its products and services. The Complainant’s services span multiple jurisdictions and sectors. The brand “WISeKey” is derived from the acronym of “World Internet Security”, an “e” symbol representing “electronic”, and the word “Key” representing the root-based “Public Key Infrastructure”. As part of its efforts to protect its intellectual property, the Complainant, its affiliates, subsidiaries, and associated companies own trademarks within several jurisdictions (i.e., International Registration, Switzerland, the United States of America) and the trademarks are publically available at “www.wipo.int/branddb/en/”.
The Complainant registered its official website “www.wisekey.com” on October 21, 1998. The website allows users to browse detailed information on different services and sectors the Complainant is operating within.
The disputed domain name was previously owned by the Complainant since December 13, 2003. However, the ownership expired in early 2018 and the Respondent has taken over and created the disputed domain name on February 11, 2018. As of now, the disputed domain name is neither active nor operative.
5. Parties’ Contentions
The Complainant contends that i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name, and iii) the disputed domain name was registered and is being used in bad faith.
The Complainant asserts that the Complainant’s mark WISEKEY is a fanciful term used to represent the Complainant’s goods and services. The Complainant’s trademark has a strong reputation and is widely known. There is no generic or common usage for the term WISEKEY nor has any evidence come to light since the disputed domain name’s registration on February 11, 2018 that the Respondent has intended to use WISEKEY in a way other than to target the Complainant. The Respondent has provided no evidence of any actual or contemplated good faith use of the disputed domain name. There is no plausible reason for the registration and use of the disputed domain name for the Respondent. The Respondent is a known cybersquatter involved in 14 previous UDRP proceedings, demonstrating a pattern of bad faith registrations.
Therefore, the disputed domain name <wisekey.net> should be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. The Language of the Proceeding
Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the registration agreement, unless otherwise agreed to by the parties, subject to the authority of the panel to determine otherwise. In this case, the language of the registration agreement is Korean. On February 5 and 14, 2019, the Complainant requested for English to be the language of the proceeding. The Respondent did not submit any request regarding the language of the proceeding. The Center notified the Respondent in both English and Korean of the Complaint, but the Respondent did not respond.
In determining the language of the proceeding in the present case, pursuant to section 4.5.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the Panel considers the following points: (i) the Panel notes that the Respondent has been involved in numerous UDRP proceedings in the past in which English was chosen as the language of the proceeding, (ii) the Panel is familiar with both English and Korean, capable of reviewing all the documents and materials in both languages and able to give full consideration to the Parties’ respective arguments; (iii) the Respondent did not respond to any of the communications made by the Center both in English and in Korean, showing its unwillingness to actively participate in this proceeding; and (iv) ordering the Complainant to translate the Complaint in English will cause undue delay and expense in the process.
In light of the aforementioned circumstances, the Panel finds that there will be no prejudice against the Respondent as a result of the Complainant’s submission in English. Thus, the Panel concludes that it will accept the Complaint as filed in English and issue a decision in English.
B. Identical or Confusingly Similar
According to paragraph 4(a)(i) of the Policy, the Complainant must prove that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark in which the Complainant has rights.
The Complainant has demonstrated that it holds trademark registrations for WISEKEY, which are closely associated with its business activities.
The disputed domain name wholly incorporates the Complainant’s trademark with the addition of the generic Top-Level Domain “.net”. It is well established that the addition of the “.net” is without legal significance when comparing the disputed domain name to the Complainant’s registered trademark. See Guccio Gucci S.p.A. v. Brenda Hawkins, WIPO Case No. D2013-0603; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374.
For the reasons stated above, the Panel finds that pursuant to the Policy, paragraph 4(a)(i), the disputed domain name is identical or confusingly similar to the Complainant’s trademarks, and the first element has been established.
C. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. In connection with the burden of proof, prior UDRP decisions have held that once a complainant establishes a prima facie showing that the respondent lacks rights or legitimate interests in the disputed domain name, the burden of production on this factor shifts to the respondent to rebut the showing (see among others, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; see also International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).
On the basis of the present record, the Panel finds that the Complainant has made the required allegations to support a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant contends that it has not licensed or otherwise permitted the Respondent to use any of its trademarks. The Panel agrees that this supports that the Respondent lacks rights or legitimate interests in the disputed domain name. See Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102 (finding that an absence of license permitting to use complainant’s trademark or to apply for any domain name incorporating any such mark is prima facie evidence that the respondent has no rights or legitimate interests in the disputed domain name).
Furthermore, the evidence and circumstances do not support a finding that the Respondent is commonly known by the disputed domain name, or that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Respondent in the present case has chosen to file no Response. Accordingly, there is no evidence or allegation in the record that would warrant a finding in favor of the Respondent on this point.
For the reasons provided above, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the second element of the Policy has been established.
D. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for a complainant to show bad faith registration and use of domain names. In the present case, the disputed domain name is not even active and the Respondent does not appear to use the disputed domain name in connection with a bona fide offering of goods or services. The Panel finds that the non-use of a domain name does not preclude a finding of bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Panel finds this applies particularly where the domain name is an exact match to a trademark.
The Panel further notes that there is a history of bad faith findings in cases involving the Respondent. See among others, Banca Sella Holding S.p.A v. Park HyungJin, WIPO Case No. D2018-0494; Mutlu Makarnacılık Sanayi Ve Ticaret Anonim Şirketi v. Park HyungJin, WIPO Case No. D2016-1231; Fontem Holdings 4, B.V. v. Park HyungJin, WIPO Case No. D2016-0620; Samsung Electronics Co., Ltd. v. Park HyungJin, WIPO Case No. D2015-2083; L’Oréal v. Park HyungJin, WIPO Case No. D2015-0954. Having considered the Respondent’s registration of multiple confusingly similar domain names to well-known trademarks, the Panel finds that these registrations constitute a pattern of bad faith registration and use under paragraph 4(b) of the Policy. For the reasons given above, on the totality of the circumstances, the Panel finds that the third and final element of the Policy has been established.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <wisekey.net> be transferred to the Complainant.
Thomas P. Pinansky
Date: March 29, 2019